On 22 March 2016, the Dutch District Court in The Hague has ruled in the case concerning UMTS (3G) technology for mobile communication, Koninklijke Philips v Asustek et al. Philips had declared EP 1 623 511 (EP 511) as essential for the so-called HSPA (high speed packet access) option in the UMTS standard, which can achieve a high-speed data transfer between mobile and base stations. Philips claimed the defendants use the UMTS standard for their products and infringe EP 511 and sought an injunction to restrain the sale of mobile phones, smartphones and tablets using the HSUPA-protocol (high speed uplink packet access). In response, the defendants contested the validity of EP 511. The Court held the patent invalid based on a lack of novelty.

The patented technology

EP 511 concerns the control of power (or strength) with which radio signals are transmitted within a communication system of radio stations. In a conventional system, transmit power is increased when channel quality is poor. In order to reduce interference with other signals and save battery life, EP 511 proposes decreasing rather than increasing the transmit power when the channel quality falls below a certain level (in the words of the patent claim, a “first criterion for decreasing the data transmit power”). On improvement of the channel quality, EP 511 proposes the radio station subsequently increases the data transmit power when it has established that a so called “second criterion for increasing the data transmit power” has been met.

Lack of novelty

The defendants argued (amongst other things) that the claims of EP 511 are invalid for lack of novelty, in light of an earlier public disclosure of the 3GPP2 standard (a mobile telephone standard mostly used in the United States).

It was not in dispute that in the 3GPP2 standard the transmit power of the Reverse Pilot Channel (one of the uplink channels in a mobile communication system) is adjusted depending on the channel quality, by way of power control commands in every time slot of a time frame. The transmit power of other (uplink) channels is subsequently adjusted because they are all given a predetermined relative gain (offset) compared to the Reverse Pilot Channel. Furthermore it was not in dispute that mobile stations can have a maximum output power level.

The 3GPP2 standard disclosed: “If the mobile station is unable to transmit at the requested output power level, it shall (…) reduce the transmission power (…) on at least one of the following code channels that are active: (…) the Reverse Supplemental Channels (…)”. [..] The mobile station shall perform this action [referring back to three possible actions] not later than the 20 ms frame boundary occurring no later than 40 ms after determining that the mobile station is unable to transmit at the requested output power level.”

Philips argued unsuccessfully that despite the above disclosure, the 3GPP2 standard did not reveal a decrease of transmit power because the words “not later than” in the relevant section of the 3GPP2 standard would suggest that a decrease of transmit power does not necessarily occur in one and the same time frame (of 20 ms). The Court reasoned that, given that the power control demands are continuously received in every time slot of one time frame, the requested output power could exceed the maximum output power level in every time slot of one time frame as well. This means that the transmit power of the Reverse Supplemental Channel must be decreased within the same time frame as soon as the requested output power level would otherwise exceed the maximum output power level. According to the Court, the 3GPP2 standard therefore disclosed a decrease of transmit power of the Reverse Supplemental Channel when a first criterion (otherwise exceeding the total maximum output power level for the mobile) is met, as described by EP 511. The Court concluded that the words “not later than” do not exclude this interpretation in any way. Rather, the Court found that the “not later than..” wording refers to the other proposed solutions for dealing with the case of the requested output power level otherwise exceeding the maximum output power level (e.g. decreasing the data rate) which can only be effected at a frame boundary.

Furthermore, the Court found that the average skilled person in the art would understand that decreasing the transmit power (which means that the predetermined relative gain of the uplink channels cannot be maintained) will only occur “if the mobile station is unable to transmit” at the requested power level. The Court found this meant that as soon as the mobile station is no longer unable to transmit at the requested power levels (because the requested output power no longer exceeds the maximum output power for example), the relative gain of each of the uplink channels will be restored, resulting in an increase of transmit power of the Reverse Supplemental Channel based on a second criterion. Additionally, it held the average skilled person would understand that increasing the transmit power again as soon as this is possible, is self-evident, because it will decrease the possibility of a loss of data during the data uplink.

FRAND defence

The defendants had argued that Philips was not entitled to an injunction, or an order to recall, because Philips as a SEP-holder had abused its dominant position within the meaning of Article 101 TFEU by not offering the Asustek parties a license under FRAND terms. The Asustek parties had requested permission to inspect Philips license agreements with other parties to further substantiate the defence that the Philips licence offer to the Asustek parties was not FRAND. The Court did not decide the FRAND issues because it had already declared the (Dutch part of the) patent invalid. For the same reason, the Court decided the Asustek parties no longer had an interest in the inspection of other license agreements and rejected this motion.